Use of Trademark Names in Fiction

By Mark Nichol

A couple of years ago, a site visitor asked about the necessity of obtaining permission to refer to trademarked products by name in fiction. Here’s the specific query:

How is copyright dealt with in fiction writing? For example, if I sell a story where I wrote that a character jogged to Burger King in his new Reeboks, would there be copyright infringement? Do I need to get approval from the holders of the copyright to use their names in my stories? And, how would I go about doing that? How do I find out what is copyright protected and what isn’t?

And here, better late than never, is the response: Fortunately for the multitudes of authors who write fiction (and the innumerable publishing companies that print their books), writers are free, for the most part, to include trademarked names in their stories.

The passage in question is especially innocuous, because the references to Burger King and Reeboks are benign: Nobody in the novel dies from eating a Whopper, and no character is fatally run over in traffic because his running shoes are defective. But even if the author had implicated one of these brands in someone’s death, legal retribution would be unlikely; the sheer volume of media overwhelms any one corporation’s efforts to monitor for and suppress defamatory references to their products.

But risk is relative: If a writer with the stature of, say, J.K. Rowling had resorted to the plot device of a deadly hamburger or a dangerous pair of running shoes, her publisher would likely be sent a cease-and-desist letter. This terse request from the trademark owner would call on the publishing company to refrain from associating the company’s delicious and nutritious WhopperR brand beef-patty sandwiches or light but sturdy and comfortable ReeboksR brand athletic shoes with anyone’s death.

(Side note: The registered trademark symbol is never required; in commercial publications, it is often inserted to imbue one’s products with a protective aura or to refer to those of others, as a courtesy, to encourage reciprocity.)

To avoid such a consequence, an astute editor would likely request that Ms. Rowling excise such libelous references before submitting the final manuscript, thus avoiding the arrival of a letter referring to “possible recourse to further legal options to protect our valuable intellectual property rights.”

But your editor would likely do the same, perhaps suggesting that instead, you call the fast food franchise Hamburger Prince or the shoes Teezoks. Interestingly, assigning closely similar names, or describing companies or products that resemble real ones but are not named in their honor (or, often, dishonor), is fair play.

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40 Responses to “Use of Trademark Names in Fiction”

  • Emil A. Georgiev

    Hi,

    a very informative read, especially for nonlegals.

    I’d also like to take up this opportunity to tell you that I recently added your blog to my Google Reader and that I enjoy reading it -). Keep up the good work!

    BR
    Emil

  • Rebecca

    This is good to know. I often wondered if you needed permission to use the names of famous people — dead or alive.

  • Chris M

    Thanks for the article! A lot of writers also don’t realize that words like
    “Rollerblades”, “Kleenex”, “Jello” and “Band-aid” are also trademark words. Still people use them in everyday conversation whether they are referring to the brand or not.

    I try to invent my own product names or business names as well. It’s more fun that way!

  • jennifer blanchard

    Thank you for this article. I’ve always wondered this myself and no one I asked ever had a straight answer for me. Now I know that it’s OK to have my character wearing Manolo Blahniks, but prolly better to steer clear of her murdering her ex-boyfriend with the heel of one 🙂

  • thebluebird11

    Interesting post…and I just want to add my two cents. I have always noticed, for as far back as I ever read “Archie” comics (and that is a lot of years!), that they did that same thing, naming things with similar names. So for example, if Veronica were to go shopping, it might be at Lacy’s (instead of Macy’s). When I was younger I wondered why they did that, and I thought it was copyright-related, but I also thought that it made the characters and their setting (Riverdale) more “hometown,” so that even if a kid didn’t have a Macy’s in her town, she could relate to a Lacy’s. I always sort of chuckled at the sound-alike names that they invented.

  • Sue O’Shields

    I’m just curious. One of my characters experiences the typical symptoms of taking an SSRI (happy pills) to combat post partum depression. She experiences detachment, a feeling of extreme laissez faire which she doesn’t like because her usual personality is fiery. This puts the brand in a negative light, although it is a true response for most users of SSRIs.

    You’ll notice I’m avoiding using the brand name even in this comment. Should I keep skipping around in my WIP? I’m somewhat repetitive in calling them “happy pills” and “sunshine pills” and the generic name.

  • Kelli

    Thank you for the information. I like the idea of taking brand names/trademarks and creating your own version (Burger Prince, Teezoks, great examples).

  • RDM

    Actually, most corporation are elated when you refer to their products in either fiction or nonfiction. It’s free advertising for them.

    This reminded me of something that happened more than 20 years ago when I was the editor of my college newspaper. One day I received a letter from the legal department of Coca-Cola. In a story we published we referred to Coke but someone made a mistake and allowed it to be published as “coke.”

    The letter politely reminded us that Coke was a registered trademark and it should always be capitalized. There was no threat of a lawsuit. From that experience I learned that most corporations employee clipping services, which scan all forms of media to find references to their products.

  • Nick Corcodilos

    I enjoy your daily newsletters, perhaps more than most because as a published writer who gets paid for his work, I am all the more aware of what I don’t know about writing! I always find useful tips in your columns.

    I’d like to offer a suggestion about the column on copyright/trademark. The reader who submitted the question seems to be confusing trademark with copyright. I think a discussion about the differences between them is worthwhile.

    Copyright protects a work (like an article, a book, an expression of an idea). Trademark protects a unique mark that identifies someone or something. For example, your column is copyrighted. My “Ask The Headhunter(R)” trade name is trademarked. I can’t trademark an article, and I can’t copyright my trade name. Thus, “Burger King” is not copyrighted; it is protected by a registered trademark. (Registration of copyright or trademark is another topic entirely.)

    You suggest that use of the registered trademark symbol is never required. While it may not be required when someone other than its owner uses it, the USPTO strongly advises that the owner always include the (R) or R-in-a-circle beside a registered trademark. Failure to use it may be construed as failure to claim the trademark, and could lead to legal difficulties in defending it. Interpretation of the law varies, but it seems to be the safe course to take.

    While it is prudent for the owner of a registered trademark to insist that the (R) be used with the mark, I don’t believe that someone using the trademark is required to use the (R).

  • Mark Nichol

    Sue:

    “I’m just curious. One of my characters experiences the typical symptoms of taking an SSRI (happy pills) to combat post partum depression. She experiences detachment, a feeling of extreme laissez faire which she doesn’t like because her usual personality is fiery. This puts the brand in a negative light, although it is a true response for most users of SSRIs.

    “You’ll notice I’m avoiding using the brand name even in this comment. Should I keep skipping around in my WIP? I’m somewhat repetitive in calling them “happy pills” and “sunshine pills” and the generic name.”

    I’m no lawyer, but I don’t see any problem with having a character experience side effects from using a medication that is well documented to have caused such effects.

  • Emil A. Georgiev

    Sue,

    do not take this as a legal advice, but as a guestimate -))).

    Very broadly speaking, in the US you might be liable under trade mark law for trade mark infringement and/or trade mark dilution.

    In order to succeed against you, however, the pills’ trade mark proprietor will have to demonstrate that you used the trade mark “in commerce” and your use was capable of confusing consumers as to the source of the pills or that your use diluted the trade mark. Not very likely in your case.

    Theoretically, you might also be liable for trade libel, provided that your statement was false and hence harmful to the product reputation of the pills.
    A true statement, albeit harmful, cannot be defamatory.

  • Andy Knoedler

    Once again we’re asked to bow low before King Commerce. Rather wimpish, I think.

    The rot set in, of course, years ago. I remember that the Kinks were coerced to change the lyrics of “Lola” from “You drink champagne and it tastes just like Coca-Cola” to “You drink champagne and it tastes just like cherry cola”.

    Interestingly this alteration was required only in the U.S. version of the song, not in U.K. or European releases. I’ve made sure that my iPod sports “Lola” with the original lyrics.

    “Product placement” in film or television is smiled on; casual mentions in novels or songs must be vetted first. The King has spoken.

  • Andrew Toynbee

    Very interesting and very useful article.

    I’ve been confused for years…having read a James Herbert story where his character frequently drove a Monza MX5 (did he originally pen it as a Mazda MX5?).

    My current effort at a novel is set in York (England) and my character frequents real shops and fast-food chains. Until today, I’ve been concerned about these outlets responding unfavourably to my using their names.

    Thanks for putting my mind at rest.

    I did get around the problem in part by having my indecisive character thinking about having a McSomething for lunch…or shopping at ‘Marks and Thingy’.

  • John Felon

    In American Psycho, Ellis uses trademark names prolifically. He also shreds acts like Genesis and Huey Lewis and the News with his satire, yet he invented a daytime talk show named The Patty Winters Show instead of picking one of several real shows that existed at the time. Maybe Oprah would’ve given him trouble, or maybe a fictional talk show gave him more artistic freedom. Inventing new companies can be fun, and it eliminates the risk of getting facts wrong. Do what best serves your story. Your publisher will tell you if there are legal concerns.

  • James

    What about all of those ads in magazines for writers, asking us to refer to, say, the particular tissue as “Kleenex brand facial tissue”? That gets cumbersome, but you say that isn’t necessary?

  • Mark Nichol

    James:

    I’ve never seen the advertisements you refer to; the idea is quaintly amusing. Just pat the cute little ads on their heads and send them along their way — and then dab your eyes with kleenex as you mirthfully ponder the absurdity of the request. Unless you’re on the payroll of Kimberly-Clark Worldwide Inc. (no comma necessary before Inc., by the way) or are writing ad copy for a company that sells its products, you can write kleenex any d*** way you please.

  • Steve

    Andy Knoedler…

    If I remember correctly Ray Davies changed coca to cherry because of BBC rules on (or rather against) product placement would have kept it off UK radio

  • T. Johnson

    I’m getting a book published, but my character’s name is the same as another already existing character. They are nothing alike and the already existing character is from a comic book. Will I get sued or anything if I still keep my character’s name.

  • Chuck Barnard

    “(Side note: The registered trademark symbol is never required; in commercial publications, it is often inserted to imbue one’s products with a protective aura or to refer to those of others, as a courtesy, to encourage reciprocity.)”

    The major reason companies do this for each other is to help avoid having their trademark “co-oped” and converted into an ordinary word.

    Xerox had this problem with their name for some time, as people refered to any photostatic copy as a “xerox.”

  • Jesse

    I love music. I want to start a blog or website that envolves my love for music but I’m afraid I will be sued when using trade marked band names, song titles, and album titles in my articles. Do you know anything about that?

  • Kate

    I have written and am moving towards publication of a book for teenagers in which the characters (mice) have cheese names, taken from many international cheeses, such as ‘Géramont’, ‘Zottarella’, ‘Petrella’ , ‘Stilton’, ‘Rambol’, ‘Redesdale’, ‘Monterey Jack’, to mention a few.

    Would I be in violation of international trademark laws in publishing this?

  • Mark Nichol

    Kate:

    These are types of cheese, not brand names, so you’re safe. You’d also be safe with brand names, however — if, for example, you named the mice Ford, Chevrolet, and Dodge.

  • Wayne Driver Jr

    Hello!

    I’ve obtained a copyright on the book I’ve written (hoping to be published one day). I was wondering if I “have” to trademark the name of the supernatural substance everyone uses (in the book). I intend on marketing the book using this (made-up) name often. Does it fall under my copyright?

  • Mark Nichol

    Wayne:

    I’m not a copyright expert, but I don’t think such a concept is copyrightable — and even if it were, I don’t know why you’d want to copyright it. Imitation is the sincerest form of flattery: Ursula K. LeGuin, for example, came up with the idea of the ansible, a virtually instantaneous interstellar communication device, and many other writers have adopted the name or the concept. As far as I know, she’s never expressed any indignation about the borrowing.

  • Andy Pandy

    “Nobody in the novel dies from eating a Whopper, and no character is fatally run over in traffic because his running shoes are defective. But even if the author had implicated one of these brands in someone’s death, legal retribution would be unlikely; the sheer volume of media overwhelms any one corporation’s efforts to monitor for and suppress defamatory references to their products.”

    My novel specifically involves many robots heads being blown off by, for example, Smith & Wesson hand-guns – but then how could Smith & Wesson be offended by their products being used to kill? They are specifically designed to kill.

    Also a can of Lynx deordorant is used to blow up a car and melt a robots face off (in combination with a cigarette lighter) – is this ok??

  • Mark Nichol

    Andy:

    I think you’re safe, so to speak, with Smith & Wesson, but you might want to avoid specifying a brand name for the deodorant, unless it’s really important — and even then you should perhaps disguise it.

  • Shaun

    Thanks for all this which came up in response to an ‘unnamed search engine’ search on this precise question. I’ve recently started writing a novel and I would prefer to use real brand names for particular things as that situate the story in a particular time and place and it suddenly occurred to me to check on the potential legalities of doing so. Your answers here made it easy.

  • Don

    Nephilim is a trademarked name, the basic meaning is a human/angel hybrid. If I use this in my comic book can I be sued?

  • Mark Nichol

    Don:

    I don’t see how nephilim can be trademarked, because it’s been used quite often by various writers and game creators. See the “Popular Culture” section of the Wikipedia article “Nephilim.” Considering its widespread usage, I recommend you research other biblical/mythical nomenclature for an alternative name or make up your own name.

  • john a kalin

    Yesterday I discovered that the “pen name” I use for my books and short stories, is actually that of another writer (whether a pen name or her real name, I don’t know) – My questions is am I legal. Can their be two different writers using the same name? –

  • Mark Nichol

    John:

    Personal names can’t be trademarked. I recommend that those starting out as writers search for other writers using the same real or pen name. A would-be novelist named John Smith who finds that there’s another novelist by that name can use a middle initial or change his name. In your case, it’s probably best at this point to share the name rather than change yours.

  • Joe Davis

    Interesting topic. A question regarding naming but a bit different than utilizing existing brand names.

    My father and I are putting the finishing touches on a book titled “The Googles” which he started in ’82 and has been collecting dust for many years. He is now concerned that since Google is around, are we in any way libel or in danger of a suit by using this title? One disclaimer: Googles have absouletly nothing to do with Google the company. They are creatures, not an entity. Nothing remotely regarding the internet or search engines, etc. in the novel.

    Also, I found another novel titled “The Googles” on copyright.gov with a fairly recent registration.

    Any thoughts or comments? Any information would be greatly appreciated.
    Joe

  • Mark Nichol

    Joe:

    I’m not a copyright expert, but I see no reason why you should hesitate to use the coincidentally identical name.

    The only area of concern is if you write a novel featuring a company called Google; call it Oodles instead. In another book, there’s no problem with having a character use Google to perform a search, no more than having a woman hop out of her Volkswagen to buy a Lotto ticket and a Big Gulp. (But having her kick her crappy VW, complain about how Lotto is a big rip-off, and get ill from drinking the Big Gulp is a triple no-no. If you want to disparage, disguise.)

  • Dean Dyer

    Thanks for a rapid and well-developed answer to an immediate question. I’m a playwright working on a comedy and have a situation in which the use of a trademarked name is integral to the plot of my latest work. Interestingly, the trademark in question is that of McDonald’s Restaurant Corporation, which makes your example citing Burger King a virtual direct hit. Now I have something to tell my publisher when she cries foul. McThanks!

  • Killion Slade

    It looks like it has been close to a year since the last comment, but I was hoping we could still ask questions.

    As a horror writer using real locations for an attack, would it be prudent to rename the place or could the city which owns it cause grief. Specifically – this is Lake Eola in Orlando. They have swan boats, and a horrific attack happens there. This is fiction, but ti depicts the place in a derogatory light. Would it be better to call it Lake Lola, instead?

  • Mcadams

    I use gun names and car models in my books. I was wondering if I will get hit with a copyright infringement law.

  • João (Portugal)

    I just want to say thanks for this article. I have been wondering about this for years now and I have yet to publish my first book. This is one of the issues that was, in a way, causing my writer’s block.

    I’m Portuguese and the protagonist in my story is a young officer in the Portuguese army. It is an extremely difficult book to write because a lot of things can go wrong with it if I don’t do my research properly. I have, for example, tried to find as much information as I could on firearms. The standard issue rifle in the Portuguese army is still the 7.62mm G3 rifle, made under license from the German company Heckler & Koch. My first assumption is that there will be no copyright issues if I refer to it as “the G3”, the way everybody speaks about it, because that particular rifle (picturing it with a carnation sticking out the end of the barrel) has become an icon of the Portuguese 1974 revolution and has therefore acquired profound cultural significance in our country. Even despite its age, it is actually stilll cherished by many. That is why I see nothing problematic here: it is common knowledge that the G3 rifle was designed more than 50 years ago and is still standard issue in Portugal, as it is common knowledge that our Spanish neighbors have had the new 5.56mm G36, also designed by Heckler & Koch, for several years now. It is common knowledge that the G3 is not a poorly-designed rifle, but the ones still in use are worn out and do need to be replaced. Soldiers have commonly complained about the rifle’s weight, sometimes about its recoil, and the occasional jamming caused by the excessive wear. All of this, while detractive to the rifle’s overall reputation, is not “my” personal opinion: it is common knowledge, and even Heckler & Koch has to admit that even a perfectly-designed rifle cannot be immune to aging.

    My second assumption is: if I were to say that the Portuguese Army is going to replace the old G3 with the new G36 (even if it is a very realistic possibility and actually came close to happening before), then there would be a problem. Even if this is not my intention at all, the firearms manufacturer would not complain because it’s good publicity anyway, but people could see this as my interpretation of what “should” be the course of action, my personal preference, or even a not-so-subtle attempt at marketing. This, while not a copyright problem, could cause an entirely different problem: it could make me lose some readers, if they think I’m just a Heckler & Koch employee trying to advertise for his company or something like that. But certainly, Heckler & Koch wouldn’t like it if I’d replace the G3 with a rifle from some other company, that’s for sure…

    Frankly, both in terms of copyright issues and misinterpreted intentions, I have always thought that creating my own rifle design that could replace the G3, without making it excessively similar to any of the legion other designs available around the world, is actually a much easier workaround to this problem. I already have enough technical knowledge anyway, from all that research. And this article seems to prove I was right.

    But it’s good to be able to reflect on this. I guess I don’t have to be afraid of mentioning “the G3” anymore. I’m looking forward to hear what anybody else thinks about this and whether they think I’m right or not.

    No, I feel I am actually not overthinking this. 🙂

  • Andy

    Hi, I have a question. I want to name a non-human character in a comic book series I’m working on, “spork”. I’ve read in various places that the term “spork” is trademarked. Now the character though non-human can speak, and is.. quite insane, to put it lightly. And the comic itself depicts a great amount of violent and gory situations. Though the character “spork” is as thusfar not a perpetrator of any of the violence. I can’t find anywhere who owns the “spork” trademark to ask them their permission for use of their trademarked name in my comic, but I was wondering if I could get in trouble for using it as a name.

  • Wendy

    I am writing a fictionalized short story which names a well-known newspaper in Chicago. It also mentions someone who was very famous who worked there but is now deceased.But in a positive way. One of my characters (not the protagonist) is portrayed as one of the current editors of this real newspaper who is hiring a columnist. In a fiction story, can I use the name of a ‘real’ newspaper and have one of my characters say they work there? Are there legal issues? If possible, a prompt reply would be appreciated, as I’m on a deadline to submit this.

  • Mark Nichol

    Wendy:
    Yes, you can refer to a character being employed by a company that exists in the real world. The only potential concern is if you imply or state that the company is doing or does something the real-life company would not want to be associated with.

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